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EXHIBIT 10.42
DATED MAY 3, 1999
ROSLIN INSTITUTE (EDINBURGH)
GERON CORPORATION
- AND -
ROSLIN BIO-MED LIMITED
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RESEARCH AND LICENCE AGREEMENT
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Dundas & Xxxxxx
000 Xxxx Xxxxxx Xxxxxx
XXXXXXX X0 0XX
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RESEARCH AND LICENCE AGREEMENT made the 3rd day of May, 1999
BETWEEN
GERON CORPORATION, a Delaware corporation having a principal place of business
at 000 Xxxxxxxxxxxx Xxxxx, Xxxxx Xxxx, Xxxxxxxxxx 00000 ("Geron");
ROSLIN INSTITUTE (EDINBURGH), a company incorporated in Scotland under the
Companies Acts with registered number 157100 and having its registered office at
Xxxxxx Xxxxxxxxxxxxx Xxxxxx, Xxxxxx, Xxxxxxxxx, Xxxxxxxxxx, XX00 0XX ("the
Institute"); and
ROSLIN BIO-MED LIMITED, a company incorporated in Scotland under the Companies
Acts with registered number 179263 and having its registered office at Xxxxxx
Xxxxxxxxxxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxx XX00 0XX ("RBM").
WHEREAS:
(A) The Institute, the Minister of Agriculture, Fisheries and Food acting
through the Ministry of Agriculture, Fisheries and Food ("MAFF") and the
Biotechnology and Biological Sciences Research Council ("BBSRC") are
joint owners of patent applications and the Institute and BBSRC are the
joint-owners of certain valuable know-how relating to both nuclear
transfer technology and the cloning and genetic modification of animals
and human cells;
(B) By an agreement dated 26th March and 7th April 1998 MAFF and BBSRC have
irrevocably consented for all purposes (except in relation to the
Cloning of Humans (as defined in Clause 1.1)) to the Institute
negotiating and granting licences under the said patent applications on
such terms and conditions as the Institute shall, in its entire
discretion, decide in respect of all applications of the inventions
which fall within the claims of the said patent applications relating to
end products for human health care, and by a letter dated 3 April 1998,
BBSRC consented to the Institute granting rights in the said know-how to
RBM ;
(C) The Institute and RBM entered into a Research Agreement on 7th April
1998 ("Existing Research Agreement") in order to fund development of
technology relating to the said patent applications and know-how
(D) On or prior to the execution of this Agreement Geron has acquired the
whole of the issued share capital of RBM;
(E) The Institute, Geron and RBM have entered into an agreement of even date
herewith ("the Licence Agreement") whereby a Licence dated 7th April
1998 between the Institute and RBM was terminated and the Institute
granted to Geron a licence of the said patent applications, know-how and
certain other intellectual property rights in respect of the fields of
use defined in the Licence Agreement;
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(F) Geron wishes to fund further development of the technology relating to
the said patent applications, know-how and other intellectual property
rights for bio-medical purposes as otherwise specified in this Agreement
and the Institute and to further the objectives of the Institute in a
manner consistent with its status as a research and educational
institute and its recognition as a Scottish Charity (number SC023592),
has agreed to carry out such research;
(G) It is also envisaged that Geron may actively participate and engage in
the research and to that end will make available to the Institute
Geron's existing know-how and other intellectual property to assist the
Institute in carrying out the research; and
(H) It has therefore been agreed that, as from the Commencement Date, the
Existing Research Agreement will be terminated and a research agreement
shall be entered into on the terms and conditions set out herein.
NOW IT IS HEREBY AGREED as follows:
1. DEFINITIONS
1.1 In this Agreement, unless the context otherwise requires, the following
words and expressions shall have the respective meanings set out
opposite them:
"Associate" shall mean, in relation to any
company, any subsidiary or holding
company of that company or any
subsidiary of any such holding
company and for this purpose
"subsidiary" and "holding company"
shall have the meanings specified in
Section 736 of the Companies Xxx
0000;
"Background Intellectual Property" shall mean all and any Intellectual
Property belonging to or used by any
party other than Foreground
Intellectual Property;
"Cloning of Humans" shall mean the uterine implantation
and development of a reconstructed
embryo with identical nuclear
genetic information to another
living or deceased human being;
"Commencement Date" the last date of execution of this
Agreement;
"Directed Research" shall mean the programmes of
scientific research funded by the
Directed Research Funding and which
are to be carried out by the
Institute at the Premises in
accordance with the Directed
Research Workplan;
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* "Directed Research Funding" shall mean the sum of [*]
"Directed Research Results" shall mean the results of the
Directed Research including all
reports, data, formulae, processes,
technical information, laboratory
books and all documents, materials,
drawings and models produced by the
Institute in the conduct of the
Directed Research in whatever form
and on whatever media they are held
and all Intellectual Property in
those results;
"Directed Research Workplan" shall mean the workplan for the
Directed Research to be agreed and
as may be amended from time to time
by the Project Board in accordance
with Clause 3.2;
"EEA" The European Economic Area as
constituted from time to time;
"Fields of Use" shall mean, subject to Clause 4 of
the Licence Agreement, all
applications of the Foreground
Intellectual Property;
"First Sale Date" shall mean the date on which Geron
or any of its Associates or any sub-
licensees first puts a Product on
the market;
"Foreground Intellectual Property" shall mean all and any Intellectual
Property arising from the Directed
Research and/or the Undirected
Research;
"Institute Intellectual Property" shall mean Intellectual Property
owned by the Institute pursuant to
Clause 7.6.1;
"Intellectual Property" means all inventions, discoveries,
know-how, processes, copyright,
design right, rights to apply for
Patents, Patents, applications for
Patents and all other intellectual
property rights of a similar nature
arising anywhere in the world;
"Jointly Owned Intellectual shall mean the Intellectual Property
Property" jointly owned by the Institute and
Geron pursuant to
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* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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Clause 7.3;
"Net Sales Price" shall mean, in relation to Sales:
(a) where the Products are Sold or
supplied on arms length terms,
the price charged in the
relevant invoice less any value
added tax or other sales taxes
and other government imposed
duties, trade or cash discounts,
insurance and packing and
freight costs (to the extent
identified in the relevant
invoice), rebates and allowances
for promotions and returns; and
(b) where the Products are Sold or
supplied otherwise than on arm's
length terms but are
subsequently sold or supplied on
arm's length terms, the price
charged under the first such
arm's length sale calculated in
accordance with paragraph (a)
above less any value added tax
or other sales taxes, trade or
cash discounts, insurance and
packing and freight costs (if
separately charged) and
allowances for returns;
"Option" shall mean the option referred to in
Clause 9.1;
"Patent" shall mean any and all patent rights
throughout the world including any
re-issues, extensions, substitutions,
continuation in part applications and
supplementary protection certificates
and all other rights of a like
nature;
"Patent Methods" means any process or method the use
or practice of which would constitute
an infringement of a Valid Claim in a
particular territory but for any
licence granted under this Agreement;
"Premises" shall mean the Institute's facilities
at the Roslin Biotechnology Centre or
any other facilities under the
Institute's control and such other
premises as Geron and the Institute
may from time to time agree;
"Products" shall mean any product, process, kit,
composition of matter, material, or
service to be used in a manner
requiring the performance of or
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production by the Patent Methods to
the extent that the manufacture, use,
sale, offer for sale, or importation
of any such product, process, kit,
composition of matter, material, or
service would constitute an
infringement of a Valid Claim in a
particular territory but for the
licence of the Jointly Owned
Intellectual Property granted by the
Institute to Geron under Clause 8.1
or any licence of Institute
Intellectual Property which may be
granted by the Institute to Geron
under Clause 9;
"Project Board" shall mean the board appointed
pursuant to Clause 3.7;
"Quarter" shall mean the period from the
Commencement Date until 30 June 1999
(inclusive), the period of three (3)
months beginning on 1 July 1999 and
each successive period of three (3)
months during the continuation of
this Agreement, and "Quarterly"
shall be construed accordingly;
* "Relevant Royalty Rate" shall mean the rate of [*] per cent
for Products intended for [*] and the
rate of [*] per cent for Products
intended for any other use including
although not limited to [*]
"Research" shall mean collectively the Directed
Research and the Undirected Research;
"Research Period" shall mean the period from the
Commencement Date until 30 June 2005
as that period may be extended
pursuant to Clause 3.6.7 or such
further period or periods as the
Institute and Geron shall agree;
"Research Teams" shall mean the teams of people
defined in the Directed Research
Workplan engaged in carrying out the
Directed Research on behalf of the
Institute from time to time under
this Agreement and any other persons
engaged in carrying out the Directed
Research on behalf of the Institute
as may be agreed between the
Institute and Geron;
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* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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"Sale" shall mean any sale, hire, lease or
other disposal on a commercial basis
of any Product by Geron any of its
Associates or any sub-licensees and
"Sold" shall be construed
accordingly;
"Schedule" shall mean the schedule (in two
parts) annexed to and which shall be
deemed to form part of this
Agreement;
"Supervisors" shall mean Xxxxxxxxx Xxxxxxx Xxxx
Xxxxx and Professor Xxx Xxxxxx or
any other persons appointed pursuant
to Clause 3.6.2;
"Undirected Research" shall mean a programme of research
* in the field of [*] to be carried
out by the Institute and which is
funded in whole or in part by the
Undirected Research Funding;
* "Undirected Research Funding" shall mean the sum of [*]
"Undirected Research Results" shall mean the results of the
Undirected Research including all
reports, data, formulae, processes,
technical information, laboratory
books and all documents, materials,
drawings and models produced by the
Institute in the conduct of the
Undirected Research in whatever form
and on whatever media they are held
and all Intellectual Property in
those results;
"Undirected Research Workplan" shall mean the workplan for the
Undirected Research to be prepared
by the Institute pursuant to Clause
4.2;
"Valid Claim" shall mean
(a) any claim of any issued and
unexpired Patent comprised in
any Intellectual Property; and
(b) any claim made in any
application for a Patent which,
if granted, would constitute a
Valid Claim;
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* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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and which claim has not been finally
rejected or declared invalid by a
patent office or by a court of
competent jurisdiction;
"Xeno Pigs Project" shall mean the continuing Xeno Pigs
Project which will comprise part of
the Directed Research Workplan; and
"Year" shall mean the period from the
Commencement Date until 30 June 1999
(inclusive) and each period of
twelve (12) months commencing on 1
July 1999 and on each anniversary of
1 July 1999.
1.2 In this Agreement unless the context otherwise requires: -
1.2.1 reference to a Clause is to a clause of this Agreement;
1.2.2 words importing the singular shall include the plural and vice
versa;
1.2.3 headings to Clauses are inserted for convenience only and shall
not affect the construction or interpretation of this Agreement;
and
1.2.4 references to any statute or statutory provision include a
reference to that statute or statutory provision as amended,
extended or re-enacted from time to time.
2. DURATION
2.1 This Agreement shall commence on the Commencement Date and shall,
subject to Clauses 17 (Force Majeure) and 18 (Termination), continue in
force during the Research Period and thereafter, on a country by country
or territory by territory basis, as appropriate, until the later of:
* 2.1.1 [*]; or
* 2.1.2 in relation to countries or territories within the EEA, [*] from
the First Sale Date in any part of the EEA and in relation to
countries or territories outside the EEA, [*] from the First
Sale Date in that country or territory.
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* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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3. DIRECTED RESEARCH
3.1 Payment for Directed Research
3.1.1 To enable the Institute to undertake the Directed Research and
to provide the necessary facilities in connection therewith,
Geron shall pay to the Institute or shall procure the payment to
the Institute of the Directed Research Funding in the manner set
out in Clause 5.
3.1.2 The Institute shall use the payments received from Geron
pursuant to Clause 3.1.1 to meet the costs of the Directed
Research specified in the budgets set forth in the Directed
Research Workplan.
* 3.1.3 The parties hereby agree that not less than [*] of the Directed
Research Funding will be allocated to research programmes [*]
3.1.4 The Directed Research (including the costs of providing
laboratory, animal and research facilities at the Institute)
shall be charged at reasonable commercial rates as shall be
agreed between the Institute and Geron in advance prior to the
commencement of each Year of this Agreement in accordance with
the principles set out in Part 1(a) of the Schedule. The rates
agreed for each Year of this Agreement may be varied only by the
prior written agreement of Geron and the Institute.
3.1.5 It is acknowledged by Geron that payment of the Directed
Research Funding is not and shall not be in any way
* conditional upon [*]
3.2 Directed Research Workplan
3.2.1 As soon as reasonably practicable and in any event within two
(2) months of the Commencement Date, the Project Board shall
prepare and agree the Directed Research Workplan having
reasonable regard to the resources available to the Institute at
that time and from time to time. The Directed Research Workplan
shall identify each separately identifiable research programme
and in respect of each such separately identifiable research
programme:
(i) the objectives;
(ii) without prejudice to Clause 3.1.5, the milestones;
(iii) the resources to be allocated to it;
(iv) the timescale for its completion; and
(v) any Background Intellectual Property (including that
owned by third parties) necessary or desirable to carry
it out.
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* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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3.2.2 The Project Board shall throughout the Research Period keep the
Directed Research Workplan under review. The Directed Research
Workplan may be amended from time to time by the Project Board.
3.2.3 Notwithstanding that the Institute shall use all reasonable
endeavours to carry out the Directed Research in accordance with
the Directed Research Workplan, if for any reason the Institute
is unable to comply with the Directed Research Workplan it shall
as soon as reasonably practicable notify the Project Board
specifying the reasons for its inability. The Project Board
shall thereafter determine whether any variation to the Directed
Research Workplan is necessary in the light of the Institute's
inability to comply with the Directed Research Workplan and, if
it considers any variation is necessary, the nature of that
variation.
3.2.4 It is the intention of the parties that the full amount of the
Directed Research Funding will be expended over the duration of
the Research Period in carrying out the Directed Research.
Subject to the Institute having available the necessary
personnel and facilities to carry out that level of research and
to clause 3.2.1, Geron and the Institute shall each procure that
their representatives on the Project Board instruct Directed
Research in accordance with the foregoing.
3.3 Conduct of the Directed Research
3.3.1 Subject to clause 6 the Directed Research shall be exclusively
undertaken by the Research Teams within the Premises, under the
supervision of the Supervisors and in accordance with the
Directed Research Workplan.
3.3.2 If at any time the Institute wishes to collaborate with any
third party in carrying out the Directed Research, it may do so
(subject to Clauses 7.5 and 7.9) only after having notified
Geron of the identity of the third party and having obtained
Geron's prior written consent to the collaboration.
3.3.3 The Institute shall at all times during the Research Period
ensure that access to the main building of the Roslin
Biotechnology Centre is controlled by means of a secure entry
system;
3.3.4 The Institute shall use its reasonable endeavours to ensure that
all documents, software and other materials (including but not
limited to animals and cell lines) embodying the Directed
Research Results are kept in a secure environment and can only
be accessed by members of the Research Teams, and that all
laboratory books are locked away when not being used by members
of the Research Teams.
3.3.5 During the Research Period the Institute shall permit duly
authorised employees or representatives of Geron to confer from
time to time with the Supervisors and to visit the Premises at
the reasonable convenience of the Institute and the Supervisors
solely for the purpose of facilitating disclosure to Geron of
the Directed Research Results and witnessing performance of the
Directed Research, provided that Geron and their duly authorised
employees or representatives shall, while on the Premises, be
bound by all
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the Institute's regulations and requirements (so far as made
known to them) which are from time to time applicable to the
Premises.
3.3.6 The Institute shall use its reasonable endeavours to ensure that
all members of the Research Teams shall at all times comply with
all necessary procedures as specified by the Project Board from
time to time in relation to the evidencing of any inventions and
protection of any associated Intellectual Property.
3.4 Reports
3.4.1 The Institute shall procure that the Research Teams deliver to
the Project Board within thirty (30) days following the end of
each Quarter a written report detailing the progress of the
Directed Research in that Quarter and containing information
regarding the Directed Research Results. In each report the
Institute will use all reasonable endeavours to identify any
Intellectual Property which may have arisen or which the
Institute considers is likely to arise in the course of the
Directed Research.
3.4.2 Within three (3) months of completion of each separately
identifiable research programme comprised within the Directed
Research, the Institute shall deliver a final report to the
Project Board summarising and collating the whole history of
that research programme and containing the results thereof
(including but not limited to any Intellectual Property which
has arisen in the course of that research programme).
3.4.3 The Institute acknowledges that all reports relating to the
Directed Research prepared pursuant to Clauses 3.4.1 and 3.4.2
shall at all times be kept confidential.
3.5 The Research Teams
3.5.1 The Institute shall procure that each Research Team shall be
composed of a sufficient number of appropriately skilled and
experienced members to carry out the Directed Research in terms
of this Agreement. All members of Research Teams shall be
subject to the approval of the Project Board.
3.5.2 The Institute shall use all reasonable endeavours to ensure the
continuity of the members of the Research Teams, both in
relation to the particular Research Team to which each member is
allocated and the particular research programme allocated to
each Research Team, so as to minimise any disruption or delay to
the Directed Research.
3.5.3 If for any reason a member of one of the Research Teams (but
excluding the Supervisors) is unable to continue with the
Directed Research, the Institute shall with the prior consent of
the Project Board promptly appoint a replacement for that
member. The Project Board shall not unreasonably withhold or
delay its consent to any replacement suggested by the Institute.
3.5.4 If at any time the Institute wishes to transfer a member of one
of the Research Teams (but excluding the Supervisors) to another
project being conducted by the Institute, the
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Institute shall first obtain the consent of the Project Board.
The Project Board shall not unreasonably withhold or delay its
consent to any transfer suggested by the Institute.
3.5.5 The Institute shall ensure that each member of the Research Team
enters into an undertaking in favour of Geron in the form set
out in Part 2 of the Schedule.
3.6 The Supervisors
3.6.1 The Research Teams shall be led by the Supervisors.
Notwithstanding any separate arrangements between Geron and each
or both of the Supervisors, the Institute shall procure that the
Supervisors devote a sufficient amount of their available time
to the Directed Research so as to enable the Directed Research
to be progressed and carried out in accordance with the terms of
this Agreement and the Directed Research Workplan.
3.6.2 If at any time during the Research Period either or both of the
Supervisors are unable or unwilling for whatever reason to
continue leading the Directed Research, the Institute shall give
notice of this immediately to the Project Board. The Institute
shall thereafter use its reasonable endeavours to find as soon
as reasonably practicable a replacement or replacements for the
Supervisor(s) who is/are acceptable to Geron. Subject to Clause
3.6.3, Geron shall have sole discretion as to the acceptability
of any person(s) proposed by the Institute as a replacement or
replacements for the Supervisor(s) provided that in reaching its
decision Geron shall take reasonable account of any comments
made by the Institute in relation to the suitability of the
person or persons suggested by the Institute.
3.6.3 Geron shall give all assistance reasonably required by the
Institute to find an acceptable replacement or replacements for
the Supervisor(s) pursuant to Clause 3.6.2.
3.6.4 Subject to Clause 3.6.6 if within six (6) months of the
Institute giving notice to Geron in accordance with Clause 3.6.2
an acceptable replacement or replacements has or have not been
found and no offer has been made to any identified replacement
or replacements which Geron has reasonable grounds to believe
will be accepted, Geron shall, provided that it is not in
material breach of its obligations under Clause 3.6.3 be
entitled to suspend further payment of the Directed Research
Funding pending the finding of a suitable replacement or
replacements for the Supervisor(s).
3.6.5 If [*], Geron shall, provided that it is not in material breach
of its obligations under Clause 3.6.3, be entitled to terminate
* this Agreement pursuant to Clause 18.2 and thereafter and
subject to clause 18.5.1 each party's rights and obligations in
relation to the Directed Research shall cease.
3.6.6 Notwithstanding the foregoing Geron shall not be entitled to
* suspend payment of the Directed Research Funding or to terminate
this Agreement under Clause 3.6.5 if [*].
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* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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3.6.7 If at any stage Geron suspends payment of the Directed Research
Funding pursuant to clause 3.6.4 and/or the Project Board is
required to suspend or delay the Directed Research because of a
lack of facilities or resources at the Institute, there shall be
added to the Research Period a period equivalent to the length
of such suspension or delay.
3.7 The Project Board
3.7.1 The Project Board shall comprise five members, two of whom shall
be appointed by the Institute and the balance of whom shall be
appointed by Geron. For so long as they remain employees of
BBSRC working at the Institute the Supervisors shall be the
Institute's appointees. If at any time during the Research
Period there are not two Supervisors the Institute shall be
entitled to appoint to the Project Board an alternative suitably
qualified scientific representative or representatives pending a
replacement or replacements for the Supervisor(s) being
appointed in accordance with Clause 3.6.2. The chairperson of
the Project Board shall be one of Geron's appointees.
3.7.2 All members of the Project Board shall be given reasonable
notice of meetings of the Project Board unless such requirement
is unanimously waived by such members. The quorum for meetings
of the Project Board shall be three members, one of which must
be an appointee of the Institute provided however that if both
of the Institute appointees are given proper notice of a meeting
of the Project Board and neither of them attends without
reasonable excuse or if, for any reason, neither of the
Institute appointees attends two properly convened consecutive
Project Board meetings or in the case of emergency, a meeting of
the Project Board will be deemed to be quorate without the
presence of either of the Institute appointees.
3.7.3 All decisions of the Project Board regarding the Directed
Research shall be by simple majority. In the case of an equality
of votes the Chairman shall have a casting vote.
3.7.4 Except as otherwise provided in this Clause 3.7, the procedures
of the Project Board, the way in which it is conducted and the
frequency of its meetings shall be determined by the Project
Board itself. Unless otherwise determined by the Project Board,
all proceedings of the Project Board shall be confidential.
3.7.5 All formal communications between the parties relating to the
conduct of the Directed Research pursuant to this Agreement
shall be made through the Project Board.
4. UNDIRECTED RESEARCH
4.1 Payment for Undirected Research
4.1.1 To enable the Institute to undertake the Undirected Research and
to provide the necessary facilities in connection therewith,
Geron shall pay to the Institute or shall
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procure the payment to the Institute of the Undirected Research
Funding in the manner set out in Clause 5.
4.1.2 The Institute shall use the payments received from Geron
pursuant to Clause 4.1.1 to meet the costs of the Undirected
Research specified in any budgets set forth in the Undirected
Research Workplan.
4.1.3 The Undirected Research (including the costs of providing
laboratory, animal and research facilities at the Institute)
shall be charged at reasonable commercial rates as shall be
agreed between the Institute and Geron in advance prior to the
commencement of each Year of this Agreement in accordance with
the principles set out in Part 1(a) of the Schedule. The rates
agreed for each Year of this Agreement may be varied only by the
prior written agreement of Geron and the Institute.
4.1.4 It is acknowledged by Geron that payment of the Undirected
* Research Funding is not and shall not be in any way conditional
upon [*]
4.2 Undirected Research Workplan
4.2.1 Within six (6) months of the Commencement Date the Institute
shall submit a written proposal to the Project Board for the
Undirected Research. This proposal shall identify each
separately identifiable research programme and in respect of
each separately identifiable research programme:
(i) the objectives;
(ii) without prejudice to Clause 4.1.4, the milestones;
(iii) the resources to be allocated to it;
(iv) the timescale for its completion; and
(v) any Background Intellectual Property (including that
owned by third parties) necessary or desirable to carry
it out.
4.2.2 The Institute shall have sole discretion as to the terms of the
Undirected Research Workplan and any amendments thereto provided
that the Institute shall consult with Geron in relation to the
proposal submitted to the Project Board pursuant to Clause 4.2.1
and any amendments thereto and shall take reasonable account of
any comments received from Geron in relation thereto.
4.3 Conduct of the Undirected Research
4.3.1 The Institute shall conduct the Undirected Research in
accordance with the Undirected Research Workplan. Provided that
it complies with the Undirected Research Workplan as the same
may be amended from time to time in accordance with the
provisions of this Agreement nothing contained in this Agreement
shall prevent the Institute carrying out
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* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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such research and experimental work as it desires in relation to
or as part of the Undirected Research.
4.3.2 If at any time the Institute wishes to collaborate with any
third parties in relation to the Undirected Research, it shall
consult with Geron regarding the proposed collaboration and
shall take reasonable account of any comments made by Geron in
relation thereto.
4.3.3 The Institute shall use its reasonable endeavours to ensure that
at all times during which Geron has rights in relation to the
Undirected Research Results under this Agreement all documents,
software and other materials (including but not limited to
animals and cell lines) embodying the Undirected Research
Results are kept in a secure environment and can only be
accessed by the persons engaged in performing the Undirected
Research on the Institute's behalf and that all laboratory books
are locked away when not being used by such persons.
4.3.4 The Institute shall use its reasonable endeavours to ensure that
all persons conducting the Undirected Research shall at all
times comply with all necessary procedures as specified by the
Project Board from time to time in relation to the evidencing of
any inventions and protection of any associated Intellectual
Property.
4.4. Reports
4.4.1 The Institute shall deliver to the Project Board from time to
time as the circumstances and conduct of the Undirected Research
require but not less than once every six (6) months during the
continuation of the Undirected Research, a written report
detailing the progress of the Undirected Research during the
period to which the report applies and containing information
regarding the Undirected Research Results.
4.4.2 The Institute will use all reasonable endeavours to identify and
shall notify to the Project Board as soon as reasonably
practicable full details of any Intellectual Property which
arises or which the Institute considers is likely to arise in
the course of the Undirected Research . With a view to ensuring
that all potential Intellectual Property is properly protected
the Project Board may from time to time request sight of any raw
data generated as part of the Undirected Research.
4.4.3 Within three (3) months of completion of each separately
identifiable research programme comprised within the Undirected
Research, the Institute shall deliver a final report to the
Project Board summarising and collating the whole history of
that research programme and containing the results thereof
(including but not limited to any Intellectual Property which
have arisen in the course of that research programme).
4.4.4 The Institute acknowledges that for so long as Geron has rights
in relation to the Undirected Research Results under this
Agreement all reports and information relating to the Undirected
Research provided pursuant to Clauses 4.4.1, 4.4.2 and 4.4.3
shall at all times be kept confidential in accordance with
Clause 14.
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4.4.5 Geron acknowledges that all reports and information relating to
the Undirected Research provided to it pursuant to Clauses
4.4.1, 4.4.2 and 4.4.3 shall at all times be kept confidential
in accordance with Clause 14.
4.5 Geron's Rights in relation to the Undirected Research Results
4.5.1 Except as provided in this Clause 4.5 and Clauses 7.6.2 and 9,
Geron shall have no rights in the relation to the Undirected
Research Results other than as may be set forth in other
agreements between the Institute and Geron and (where
appropriate) other third parties specifically relating to the
Undirected Research Results.
4.5.2 Subject to its obligations under Clause 4.4.5 Geron may carry
out such investigations, developmental and experimental work as
it thinks desirable with a view to assessing the commercial
possibilities of the Undirected Research Results.
5. PARTICIPATION BY GERON IN THE RESEARCH
5.1 It is envisaged that Geron shall participate in the conduct of the
Directed Research and the Undirected Research and at all times provide
leadership for and input into the Research via Project Board. Such
participation by Geron may also include:
(a) the provision to the Institute of background know-how and
information in the areas in which Geron is specialised and which
are relevant to and useful for the carrying out of the research;
(b) the licensing to the Institute of Geron's Background
Intellectual Property for the purposes of the Research in
accordance with Clause 8.2;
(c) participation of Geron personnel on one or more of the Research
Teams to assist with the carrying out of the Research;
(d) carrying out of discrete parts of any of the research programs
which form part of the Directed Research Workplan and the
Undirected Research Program by Geron personnel at the premises
of Geron;
(e) arranging for regular visits by Geron and members of the
Research Teams to the parties' respective premises so that Geron
personnel can advise the Research Teams on any issues or
problems which they may have encountered in carrying out the
Research.
5.2 In order to facilitate Geron's participation Geron will set up direct
methods of electronic and telephonic systems between its personnel and
the members of the Research Teams.
5.3 The costs of Geron's participation in the conduct of the Research under
clauses 5.1 and 5.2 shall be borne by Geron and shall not be deducted
from the Directed Research Funding or Undirected Research Funding.
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6. PAYMENT PROCEDURES
6.1 The Institute shall invoice Geron in advance for each instalment of the
Directed Research Funding and the Undirected Research Funding. The first
instalment of the Directed Research Funding in the amount of [*] shall
be paid by Geron to the Institute on the Commencement Date. The second
* instalment of the Directed Research Funding in the amount of [*]shall be
paid by Geron to the Institute on 1 July 1999. Thereafter instalments of
Directed Research Funding and Undirected Research Funding shall be paid
to the Institute Quarterly in accordance with the budgets set out in the
Directed Research Workplan and the Undirected Research Workplan.
6.2 At the end of each Quarter the Project Board shall reconcile the
payments made by Geron under Clause 5.1 with the actual sums spent by
the Institute in conducting the Directed Research and the Undirected
Research during that Quarter. The Institute will provide to the Project
Board all information reasonably necessary to enable the Project Board
to make such reconciliations, including information relating to the
application of the Directed Research Funding and the Undirected Research
Funding to meet the costs of carrying out the Directed Research and the
Undirected Research Funding respectively. Any sums paid by Geron but not
used by the Institute to meet the costs of the Directed Research or the
Undirected Research (as the case may be) shall be carried forward and
set off against the instalment due by Geron in respect of the following
Quarter in respect of the Directed Research and the Undirected Research
(as the case may be) provided that the Directed Research Funding shall
not be set off against the Undirected Research Funding or vice versa.
6.3 All sums payable to the Institute under this Agreement:
6.3.1 are stated exclusive of value added tax or any other tax which
may at any time during the period of this Agreement replace
value added tax, which (if payable) shall be paid in addition by
Geron at the appropriate rate subject to receipt of a suitable
invoice; and
* 6.3.2 shall be paid in Pounds Sterling by bank transfer to the
Institute's bank account [No: [*]] at Bank of Scotland, The
Mound, Edinburgh (Sort Code No [*]) or such other bank account
as may be designated in writing by the Institute.
*6.4 Without prejudice to any other rights accruing to the Institute, if any
sums payable by Geron to the Institute pursuant to this Agreement remain
unpaid on the due date for payment, interest at the rate of [*] above
the base rate from time to time of the Bank of Scotland shall be payable
on such sums from the due date for payment until the date of actual
payment in full, PROVIDED THAT no interest shall be payable by Geron
where the failure to make payment by the due date is due to any default
or failure on the part of the Institute.
----------
* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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6.5 All sums payable under this Agreement shall be made in full without
deduction of taxes, charges and other duties (including any withholding
or other income taxes) that may be imposed except where Geron is
required by law to make such deduction or withholding, in which event
Geron shall:
6.5.1 ensure that the deduction or withholding does not exceed the
minimum amount legally required;
6.5.2 pay to the applicable taxation or other authorities within the
period for payment permitted by law the full amount of the
deduction or withholding;
6.5.3 furnish to the Institute, within the period for payment
permitted by law, either (a) an official receipt of the
applicable taxation or other authorities for all amounts
deducted or withheld as aforesaid or (b) if such receipts are
not issued by the taxation or other authorities concerned on
payment to them of amounts so deducted or withheld, a
certificate of deduction or equivalent evidence of the relevant
deduction or withholding; and
6.5.4 co-operate in all respects necessary to permit the Institute to
take advantage of such double taxation agreements as may be
available.
7. CLONING OF HUMANS
7.1 Geron and RBM hereby acknowledge that at the Commencement Date the
Institute is expressly prohibited from carrying out any experiments or
otherwise engaging in any research directed towards or relating to the
Cloning of Humans.
8. INTELLECTUAL PROPERTY RIGHTS
8.1 Subject to Clauses 7.2 and 8.2 it is acknowledged that nothing in this
Agreement shall operate to transfer or grant any right in any Background
Intellectual Property which may be used by any party in connection with
the Directed Research and/or the Undirected Research unless expressly
provided in this Agreement.
8.2 Geron hereby grants to the Institute a royalty-free, non-exclusive
licence for the duration of the Research Period to use any of its
Background Intellectual Property to the extent necessary for carrying
out the Directed Research and the Undirected Research.
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8.3 Except as provided in Clauses 7.4 and 7.5.2 any and all Intellectual
Property arising from the Directed Research shall be and remain the
joint property of the Institute and Geron both of whom shall have a one
half pro indiviso share.
8.4 Any and all Intellectual Property arising from the Xeno Pigs Project,
whether embodied in the Directed Research Results or otherwise, shall be
and remain the property of Geron.
8.5 The Institute shall ensure that the terms of any collaboration
agreements entered into pursuant to Clause 3.3.2 provide that ownership
of all or any Intellectual Property arising from any collaboration
relating to:
8.5.1 the Directed Research (other than the Xeno Pigs Project) are
jointly owned by Geron and the Institute each of whom shall have
one half pro indiviso share; and
8.5.2 the Xeno Pig Project, are owned solely by Geron.
8.6 Unless otherwise agreed in writing between the Institute and Geron, any
and all Intellectual Property arising from the Undirected Research,
whether embodied in the Undirected Research Results or otherwise:
8.6.1 which is developed solely by the Institute shall be and remain
the sole and exclusive property of the Institute; and
8.6.2 which is jointly developed by Geron and the Institute shall be
the joint property of the Institute and Geron both of whom shall
have one half pro indiviso share.
8.7 Geron and the Institute hereby agree that any Intellectual Property
arising from the Undirected Research shall not be deemed to have been
jointly developed for the purposes of Clause 8.6.2 merely because it has
been developed by the Institute using the Undirected Research Funding.
8.8 Neither Geron nor the Institute shall assign their share in any Jointly
Owned Intellectual Property to any third party save as part of an
assignation of their whole rights and obligations under this Agreement
in accordance with Clause 20.
8.9 The Institute shall, and shall procure that any person working on behalf
of the Institute, employed at the Institute or working in collaboration
with the Institute pursuant to Clause 3.3.2 shall, at the expense of
Geron (as to out of pocket expenses only) execute such documents and do
such acts as may reasonably be required by Geron to confirm Geron's
ownership of any Jointly Owned Intellectual Property and/or the
Intellectual Property owned solely by Geron under Clause 8.4.
8.10 Geron shall, and shall procure that any of its employees or
representatives shall, at the expense of the Institute (as to out of
pocket expenses only) execute such documents and do such acts as may
reasonably be required by the Institute to confirm the Institute's
ownership of any Jointly Owned Intellectual Property.
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8.11 Geron and the Institute shall each, and shall procure that any person
employed by them or working on their behalf in conducting the Undirected
Research shall, at the expense of the other (as to out of pocket
expenses only), execute such documents and do such acts as may
reasonably be required by the other to confirm the other's ownership of
any Intellectual Property pursuant to Clause 8.6.2.
9. EXPLOITATION RIGHTS
9.1 The Institute hereby grants to Geron an exclusive worldwide licence to
use the Institute's share of any Jointly Owned Intellectual Property for
the purpose of exploiting the Jointly Owned Intellectual Property in the
Fields of Use. The Institute shall not grant or purport to grant any
rights to exploit the Jointly Owned Intellectual Property to any third
party, or use the Jointly Owned Intellectual Property for any commercial
purpose whatsoever.
9.2 If Geron requires any Background Intellectual Property of the Institute
(with the express exception of the Intellectual Property which is
subject of the Licence Agreement) used by the Institute in conducting
the Directed Research for the purpose of exploiting the Jointly Owned
Intellectual Property in the Fields of Use, the Institute will:
9.2.1. if such Background Intellectual Property is owned or freely
licensable by the Institute, grant a royalty-free non-exclusive
licence to Geron of any such Background Intellectual Property
for this specific purpose; and
9.2.2 if such Background Intellectual Property is owned by a third
party and is not freely licensable by the Institute, use its
reasonable endeavours to assist Geron to obtain a licence to use
such Background Intellectual Property for this specific purpose
on reasonable commercial terms.
9.3 Notwithstanding the licence referred to in Clause 8.1, the Institute
shall be entitled to use any Jointly Owned Intellectual Property and any
Intellectual Property arising from the Xeno Pigs Project for its
academic research and teaching purposes only and Geron hereby grants to
the Institute a non-exclusive, royalty-free licence (but without any
right to sub-licence) to use Geron's share of any Jointly Owned
Intellectual Property and to use any Intellectual Property arising from
the Xeno Pigs Project for that purpose only.
9.4 Geron shall be entitled to grant sub-licences to third parties of any
Jointly Owned Intellectual Property for the purpose of exploiting the
Jointly Owned Intellectual Property in the Fields of Use provided that
the sub-licence agreement contains undertakings by the sub-licensee to
observe and perform provisions substantially the
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same as those contained in this Agreement with regard to Fields of Use,
confidentiality and termination and prohibits any assignation and
further sub-licensing.
9.5 Geron hereby represents, warrants and undertakes to the Institute that
it will not take any steps or purport to exploit the Institute
Intellectual Property unless and until it has entered into a licence
agreement with the Institute pursuant to its exercise of the Option.
9.6 Neither the Institute nor Geron shall sub-licence or otherwise
commercially exploit the Directed Research Results or the Jointly Owned
Intellectual Property for the purposes of the Cloning of Humans.
9.7 Geron shall at all times indemnify the Institute and keep the Institute
indemnified against all costs, claims, damages or expenses incurred by
the Institute or for which the Institute may become liable with respect
to any product liability claim relating to any products or processes
(including Products) produced or supplied or put into use by Geron or
any of its Associates or sub-licensees, provided that the Institute
shall, at Geron's expense (as to out of pocket expenses only), give such
assistance as Geron may reasonably require in order to defend any such
claim, shall not without the prior written consent of Geron take any
steps to defend, settle or compromise any such claim, and shall not
without Geron's prior written consent make any admission with respect to
such claim. The foregoing indemnity will not apply where the costs,
claims, damages or expenses arise as a result of negligence, breach of
any term of this Agreement or willful deceit on the part of the
Institute, its agents or employees.
9.8 At all times during which any Products are being produced, supplied or
put to use by Geron or any of its Associates or any sub-licensee, Geron
shall, in order to meet its obligations to the Institute under Clause
8.7, either self insure or obtain and maintain reasonable insurance, in
each case commensurate with good industry practice. In the event that
Geron obtains insurance it shall on request by the Institute, (subject
to Clause 14) supply the Institute with a copy of the insurance policy.
9.9 If any third parties approach the Institute regarding the Directed
Research Results and wish to utilise the same, the Institute shall
inform Geron as soon as reasonably practicable. The Institute shall not
disclose any information in respect of the Directed Research and/or the
Directed Research Results to any third party without the prior written
consent of Geron which consent Geron may grant or withhold in its
absolute discretion.
9.10 Geron undertakes at all times when this Agreement is in force to use its
reasonable endeavours to exploit the Jointly Owned Intellectual
Property. If at any time Geron decides that it no longer wishes to
exploit the Intellectual Property it shall so advise the Institute and
thereafter the parties shall enter into discussions in good faith with a
view to entering alternative arrangements to maximise the value to both
parties of the Jointly Owned Intellectual Property.
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10. OPTION RIGHTS
10.1 The Institute hereby grants to Geron an option to acquire from the
Institute an exclusive worldwide licence to use any and all Institute
Intellectual Property for the purpose of exploiting the Undirected
Research Results in the Fields of Use. If Geron requires to use any
Background Intellectual Property of the Institute (with the express
exception of the Intellectual Property which is the subject of the
Licence Agreement) used by the Institute in conducting the Undirected
Research for the purpose of exploiting the Institute Intellectual
Property the Institute will:
10.1.1 if such Background Intellectual Property is owned or freely
licensable by the Institute, grant to Geron a non-exclusive
right to use such Background Intellectual Property to the extent
necessary for such exploitation; and
10.1.2 if such Background Intellectual Property is owned by a third
party and is not freely licensable by the Institute, use its
reasonable endeavours to assist Geron to obtain a licence to use
such Background Intellectual Property for this specific purpose
on reasonable commercial terms.
10.2 Under any licence granted pursuant to Geron exercising the Option Geron
shall pay to the Institute royalties in respect of all Sales during each
Quarter at the Relevant Royalty Rate of the aggregate Net Sales Price of
the Products.
10.3 The Option may be exercised by Geron by serving upon the Institute an
appropriate written notice at any time prior to the expiry of three (3)
months from the date on which the Institute's final report of each
separately identifiable research programme comprised within the
Undirected Research being delivered to the Project Board pursuant to
Clause 4.4.3 or such other period as Geron and the Institute may
mutually agree between them.
10.4 Upon the Institute's receipt of a written notice from Geron pursuant to
Clause 9.3, the Institute and Geron shall negotiate in good faith the
terms of the exclusive licence to be granted to Geron. Such negotiations
will include the amount of any licence fees (which may be paid in one or
more instalment) and the proportion of any patent costs which shall be
payable by Geron, but shall not include royalty rates or any other form
of payment for use of the relevant Institute Intellectual Property which
shall by governed by Clause 10.2.
10.5 If the Institute and Geron are unable to agree the terms of an exclusive
licence within ninety (90) days of the Institute's receipt of a written
notice pursuant to Clause 10.3, Geron shall be entitled within fourteen
(14) days of the expiry of the ninety (90) day period to elect by giving
notice in writing to be granted a non-exclusive licence pursuant to
Clause 10.6 and/or to refer any matter in dispute for determination by
an independent expert pursuant to Clause 10.7.
10.6 If pursuant to Clause 10.5 Geron elects to be granted a non-exclusive
licence, the parties will within forty five (45) days of the date of
Geron's election negotiate the terms of the
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non-exclusive licence and subject to Clause 10.1, any licence to use any
Background Intellectual Property, PROVIDED THAT for the purposes of the
non-exclusive licence:
(a) royalties shall be calculated and payable at the Relevant
Royalty Rate on the aggregate Net Sales Prices of Products; and
(b) there shall be no licence fees or any other form of payment.
If the other terms of the non-exclusive licence are not agreed within
the forty five (45) day period specified in this Clause 10.6, any matter
in dispute may be referred by either the Institute or Geron for
determination by an independent expert as set forth in Clause 10.7.
10.7 Geron may pursuant to Clauses 10.5 or 10.6 and the Institute may
pursuant to Clause 10.6 refer any matters in dispute (which shall in the
case of a referral by Geron under Clause 10.5 include the terms upon
which a non-exclusive licence should be granted to Geron) for
determination by an independent expert ("the Expert") nominated by
agreement between the Institute and Geron or, failing agreement within
twenty one (21) days of referral by Geron, by the President of the
Chartered Institute of Patent Agents from time to time. The Institute
and Geron shall each be entitled to submit to the Expert within twenty
eight (28) days of the date upon which the Expert is appointed written
submissions, documentation and other evidence relating to or supporting
its position in relation to the matters in dispute. A copy of all such
written submission, documentation and other evidence shall, at the same
time as submission to the Expert, be delivered to the other party. The
Expert shall, unless the Institute and Geron otherwise agree, convene a
meeting to be held within five (5) weeks of the expiry of such twenty
eight (28) day period at such time (having due regard to the
availability of relevant persons) and at such place as the Expert may
decide at which both the Institute and Geron shall (unless either shall
otherwise determine in respect of itself only) be heard and
cross-examined by the Expert. The Institute and Geron shall use their
reasonable endeavours to procure that the Expert makes his determination
within ninety (90) days following the date of his appointment. The fees
and costs of the Expert shall be borne as the Expert shall determine.
The Expert's decision shall be final and binding on all parties to this
Agreement.
10.8 Following a referral to an independent expert by Geron pursuant to
Clause 9.5, Geron shall be entitled within thirty (30) days of the date
of the Expert's decision to elect by giving notice in writing to the
Institute to either:
10.8.1 take an exclusive licence on the terms determined by the Expert;
or
10.8.2 take a non exclusive licence on the terms determined by the
Expert; or
10.8.3 forego its rights to be granted any licence of the Institute
Intellectual Property.
In the absence of any election by Geron in accordance with Clauses
10.8.1 or 10.8.2, Clause 10.8.3 shall be deemed to apply.
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10.9 If:
10.9.1 Geron does not exercise the Option; or
10.9.2 the Option having been exercised, the Institute and Geron are
unable to agree the terms of the licence pursuant to Clauses
10.4 or 10.6 and the matters in dispute are not referred to an
expert for determination within the periods specified in
Clauses 10.5 or 10.6; or
10.9.3 Geron does not make a valid election in accordance with Clause
10.8; or
10.9.4 this Agreement is lawfully terminated by the Institute pursuant
to Clause 18, the Option shall lapse with respect to the
particular Institute Intellectual Property and cease to have any
further effect and neither Geron nor the Institute shall be
under any obligation to the other in relation to those
Undirected Research Results and/or that Institute Intellectual
Property save as follows:
(a) Geron shall forthwith return to the Institute all
documents relating to the relevant Undirected Research
Results and the Institute Intellectual Property and any
relevant Background Intellectual Property of the
Institute as referred to in Clause 10.1 supplied to
Geron by the Institute together with any copies of or
extracts from such documents which Geron has made;
(b) Geron shall not, and shall procure that its officers and
employees shall not, at any time thereafter use or
disclose to any person, firm or company any information
given to it regarding the relevant Undirected Research
(including but not limited to the relevant Undirected
Research Results) or any use or application of the
Institute Intellectual Property and any relevant
Background Intellectual Property of the Institute as
referred to in Clause 10.1;
(c) the Institute shall not, and shall procure that its
employees shall not, at any time thereafter use or
disclose to any person, firm or company any trade or
industrial secrets or other confidential information of
Geron (including but not limited to any of Geron's
Background Intellectual Property) made available to the
Institute by Geron for the purposes of or relating to
the Undirected Research (including but not limited to
the Undirected Research Results) or any use or
application of the Institute Intellectual Property; and
(d) subject to Clause 10.10, the Institute shall be entitled
to grant to any third party a licence to use the
Institute Intellectual Property for the purpose of
exploiting the Undirected Research Results.
*10.10 The Institute hereby represents, warrants and undertakes to Geron that
it shall not at any time before the [*] from the date of delivery of its
final report for each separately
----------
* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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identifiable research programme comprised within the Undirected Research
being delivered to the Project Board pursuant to Clause 4.4.3 or during
any period of negotiation or determination pursuant to Clauses 10.4,
10.5, 10.6 or 10.7 and the period specified in Clause 10.8, grant to any
third party an option to acquire a licence or otherwise grant to any
third party any right to use the Institute Intellectual Property for the
purpose of exploiting the Undirected Research Results developed in the
course of such research programme.
11. ROYALTIES
11.1 In consideration of the licence rights granted to Geron pursuant to
Clause 8.1, Geron shall pay to the Institute royalties in respect of all
Sales during each Quarter at the Relevant Royalty Rate of the aggregate
Net Sales Prices of the Products Sold during that Quarter.
*11.2 If any Product incorporates or bundles core technologies for the
purposes of calculating royalties payable under Clause 10.1 the royalty
shall be [*] irrespective of the number of technologies.
11.3 If any Product is combined with any other products (a "Combination
Product") for the purposes of calculating Royalties the Net Sales Price
shall be the greater of:
* 11.3.1 [*]
* 11.3.2 [*]
*11.4 In the event that Geron is required to pay to any third party royalties
in respect of licenses which are necessary in order to effect Sales of
Products, the royalty payable to the Institute in respect of such Sales
shall be reduced by an amount equal to [*] of third party royalties so
paid or payable, provided that such reduction shall not cumulatively
exceed [*] of royalties payable to the Institute.
11.5 Any royalties payable by Geron in respect of Products Sold during any
Quarter shall be paid within sixty (60) days following the end of that
Quarter in accordance with the procedures set out in Clause 6 and shall
be accompanied by a written statement showing:
11.5.1 the total number of Products Sold during the relevant Quarter;
11.5.2 the Net Sales Price in respect of each Product Sold during the
relevant Quarter; and
----------
* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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11.5.3 the total amount of the royalties payable with all necessary
particulars of how the royalties have been calculated.
11.6 If any judgment that one or more patent claims which form part of the
Jointly Owned Intellectual Property or the Institute Intellectual
Property are not Valid Claims is subsequently reversed on appeal then
the patent claims in question shall be deemed to have been Valid Claims
for the whole of the period ("the relevant period") from the date of
first judgment until the date of the Appeal (the "Appeal Judgment").
Within sixty (60) days of the date of the Appeal Judgment Geron shall
provide to the Institute a statement containing a recalculation of the
Royalties arising during the relevant period taking into account that
the aforesaid patent claims were Valid Claims and shall at the same time
pay to the Institute any shortfall between the Royalties previously paid
in respect of the relevant period and the Royalties which are shown by
such recalculation to have been due.
12. PROPER ACCOUNTS
12.1 Geron shall maintain (and retain for not less than six (6) years) true
and accurate accounts and records of all Sales which shall show in
sufficient detail all facts necessary for the accurate calculation of
the royalty payments payable by Geron pursuant to this Agreement.
12.2 Geron shall permit the Institute and its accountants not more than once
in any Year on reasonable prior notice to inspect the accounts and
records referred to in Clause 12.1 for the purpose of verifying that all
royalties due to the Institute pursuant to this Agreement have been
properly calculated. The Institute shall, and shall procure that its
accountants shall, treat information arising from such inspection as
strictly confidential.
12.3 If it is established that the amount of royalties paid in respect of any
Quarter is 5% or more less than the amount of the royalties which were
properly payable under Clause 11 in respect of that Quarter Geron,
shall, within seven (7) days of the date on which it is so established,
pay the shortfall to the Institute together with any interest due
thereon and the reasonable costs and expenses incurred by the Institute
in making the inspection and audit pursuant to which the underpayment is
discovered. Any overpayment of royalties Quarters shall be credited
against royalties owed to the Institute for the following Quarter or
shall be repaid by the Institute to Geron within fourteen (14) days of
the Institute's receipt of a notice from Geron requiring repayment.
12.4 The provisions of this Clause 12 shall remain in full force and effect
following the expiry or termination of this Agreement for any reason
whatsoever until the settlement of all subsisting claims of the
Institute under this Agreement.
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13. PATENT PROTECTION
13.1 Geron shall be responsible for diligently preparing, filing, prosecuting
and maintaining all Patent Applications and Patents comprised within the
Jointly Owned Intellectual Property. Geron shall have sole discretion in
relation to the patenting strategy to be adopted in relation to any
patentable inventions, Patent application and/or Patents comprised
within the Jointly Owned Intellectual Property provided that Geron shall
consult with the Institute in relation to the patenting strategy and
shall take reasonable account of any comments received from the
Institute in relation to and prior to implementation of such patenting
strategy.
13.2 Notwithstanding Clause 12.1 if, at any time, Geron wishes to remove any
country or territory from the scope of any Patent rights or to abandon
any Patent application in whole or in part which has been filed pursuant
to this Clause 12, it shall give not less than twenty eight (28) days
notice in writing to the Institute of its proposed intentions. If the
Institute elects to file, prosecute and maintain (or to continue to
file, prosecute and maintain) those Patents rights within the relevant
countries or territories at its sole expense and cost, any Patents
granted in the relevant countries or territories shall be owned
exclusively by the Institute and shall not thereafter constitute Jointly
Owned Intellectual Property. Geron shall at the cost of the Institute
(as to out of pocket expenses only) execute such deeds and do such acts
as may reasonably be required by the Institute to assign such Patent
rights to the Institute.
*13.3 Subject to Clause 13.2, Geron and the Institute shall each be liable [*]
of the costs of preparing, filing, prosecuting and maintaining any
Patent rights (including reasonable legal and patent agents fees and
expenses) comprised within the Jointly Owned Intellectual Property,
provided that if either of them withdraws in accordance with Clause
13.2, it shall after the date of withdrawing cease to be liable to bear
or reimburse any part of the costs, fees or expenses as aforesaid other
than the costs, fees and expenses incurred prior to the date of
withdrawing. Costs shall not include any internal costs of the parties
and the expense of any management time. Any sums expended by Geron in
connection with the preparing, filing, prosecution and maintaining of
Patent rights shall be offset against any royalties arising under clause
* 11 of this Agreement provided that the amount of such offset shall not
exceed [*] of the royalties due in any Year.
13.4 If at any time any claim is made by a third party that any Patent right
comprised within the Jointly Owned Intellectual Property is invalid,
each party shall promptly notify the other parties of such claim. Geron
shall be entitled to conduct the defence of any such claim and shall at
all times keep the Institute informed as to the progress of such defence
and take into account the reasonable comments of the Institute and in
relation to the conduct of such defence. The costs of any such defence
shall be deemed to be part of the costs of maintaining the Patent rights
and shall be dealt with in accordance with Clause 13.3.
----------
* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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13.5 The Institute and Geron shall forthwith notify each other of any
infringement or suspected infringement by any third party of any Jointly
Owned Intellectual Property which may come to their attention. Unless
otherwise agreed Geron shall have ninety (90) days within which to
commence proceedings for the purposes of protecting the Jointly Owned
Intellectual Property. The Institute hereby authorises Geron to
institute proceedings in the joint names of Geron and the Institute in
respect of any such infringement or suspected infringement of the
Jointly Owned Intellectual Property.
13.6 The Institute hereby agrees to execute such deeds or other documents and
provide such assistance as Geron may reasonably require for the purposes
of any defence under Clause 13.4 and any infringement action under
Clause 13.5 (including authorising any attorneys appointed by Geron to
conduct the action in the name of the Institute) provided that Geron
shall indemnify the Institute against its reasonable costs and expenses
in so doing. Geron shall have full conduct of any such proceedings under
Clauses 13.4 and 13.5 and the right to give instructions to the
appointed attorneys as to how such proceedings are to be conducted but
shall at all times keep the Institute informed as to the conduct of the
proceedings and shall take account of all reasonable comments of the
Institute in relation to the proceedings insofar as reasonably
practicable prior to taking any steps in the conduct of the proceedings.
Subject thereto the Institute shall not take any part in the proceedings
and shall not settle or compromise such proceedings in any way without
the prior written consent of Geron. If within the period of ninety (90)
days from the date upon which notice of any third party claim is
received by Geron under Clause 13.4 or within the period of ninety (90)
days specified in Clause 13.5, Geron has not initiated the defence of
the claim under Clause 13.4 or any action in respect of the infringement
under Clause 13.5 then the Institute shall be entitled to do so in its
own name and at its own expense and Geron hereby agrees to execute such
deeds or other documents and to provide such assistance as the Institute
may reasonably require in so doing provided that the Institute shall
indemnify Geron against its reasonable costs and expenses.
13.7 Subject to Geron or the Institute (as the case may be) being fully
reimbursed for all its reasonable costs and expenses referred to in
Clause 13.6, unless otherwise agreed any damages or costs awarded in the
course of any infringement action or any sums which are agreed to be
paid in settlement of any infringement action shall belong to the party
bringing the action.
13.8 If Geron or the Institute considers that it has grounds for dispute with
any person who has entered into an agreement with either of them
relating either to the Jointly Owned Intellectual Property or to any
Institute Intellectual Property licensed to Geron under Clause 10, such
party shall immediately notify the other whereupon Geron and the
Institute shall consult with a view to agreement on the appropriate
course of action. If Geron and the Institute fail to agree upon an
appropriate course of action either party desiring to undertake
proceedings against the person concerned shall have the right to do so
at its own cost and provided it shall indemnify and keep indemnified the
other party against all or any costs and expenses arising in or from
such proceedings.
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13.9 The Institute shall have sole discretion in relation to the patenting
strategy to be adopted in relation to any patentable inventions, patent
applications and/or patents comprised within the Institute Intellectual
Property which is not licensed to Geron under Clause 10 provided that
for so long as Geron has rights under Clause 10 in relation to such
Institute Intellectual Property the Institute shall consult with Geron
in relation to the patenting strategy and shall take reasonable account
of any comments received from Geron in relation and prior to
implementation of such patenting strategy.
14. WARRANTIES AND INDEMNITIES
14.1 The Institute represents, warrants and undertakes to Geron that:
14.1.1 it has full power and authority to enter into this Agreement and
does not require the consent or approval of any third party;
14.1.2 in performing the Directed Research and the Undirected Research
it will not knowingly use, without all necessary consents, any
Intellectual Property belonging to a third party;
14.1.3 it shall carry out all of its obligations under this Agreement
in a timely, competent and professional manner and with all
reasonable skill and care; and
14.1.4 the persons executing this Agreement on behalf of the Institute
are authorised to do so.
14.2 Geron represents, warrants and undertakes to the Institute that:
14.2.1 it has full power and authority to enter into and execute this
Agreement;
14.2.2 it is not in any way restricted, prevented or prohibited from
entering into or performing its obligations under this
Agreement;
14.2.3 by entering into this Agreement, it will not be in breach of any
other agreement or arrangement; and
14.2.4 the persons executing this Agreement on behalf of Geron are
authorised to do so.
14.3 The Institute hereby agrees to indemnify Geron in respect of any claims
imposed upon and reasonable costs, expenses and losses incurred by Geron
as a result of the infringement or alleged infringement of any third
party Intellectual Property by the Institute in conducting the Directed
Research and/or Undirected Research.
15. CONFIDENTIALITY
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15.1 The Institute agrees that it shall, at all times, both during and after
the term of this Agreement, maintain confidentiality in relation to the
Directed Research and the Undirected Research including the Directed
Research Results and the Undirected Research Results except to the
extent that the Institute shall be entitled to enter into any licence or
sub-licence pursuant to Clause 10.9.
15.2 All of the parties agree that they shall (and they shall procure that
all of their repective employees, consultants, representatives
sub-contractors and agents) at all times during the period of this
Agreement and thereafter maintain confidentiality in relation to any
proprietary information or business secrets of the other parties which
is disclosed to them in the course of the Directed Research and/or the
Undirected Research.
15.3 The obligations contained in Clauses 15.1 and 15.2 shall not extend to
any information which:
15.3.1 is generally available to the public otherwise than by reason of
breach by the recipient of the provisions of this Clause; or
15.3.2 is known to the recipient and is at its free disposal prior to
its receipt under this Agreement provided that such prior
knowledge can be demonstrated by written evidence; or
15.3.3 is subsequently disclosed to the recipient party without
obligations of confidence by a third party owing no such
obligations in respect of the information; or
15.3.4 is required to be disclosed to any governmental agency or
regulatory body including, without limitation, the Ministry of
Agriculture, Fisheries and Food, the Biotechnology and
Biological Sciences Research Council or as may be required under
the National Audit Xxx 0000, or is otherwise legally required to
be disclosed, PROVIDED THAT in all cases the party required to
make the disclosure shall take all reasonable steps to ensure
that the disclosure is the minimum necessary to comply with its
legal requirements and in the case of any disclosure pursuant to
any Court order will seek from the Court an appropriate order
safeguarding the confidentiality of the material disclosed; or
15.3.5 is independently developed by the recipient party without
reference to any information disclosed to it under this
Agreement,
PROVIDED THAT in using such information the recipient shall not take any
action which would prejudice the protection of any Intellectual Property
contained in such information.
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16. PUBLICATION OF RESULTS
16.1 Geron recognises that it is the Institute's policy to publish the
Directed Research Results and the Undirected Research Results and Geron
agrees subject to Clause 16.2 that the Supervisors, any other member of
the Research Team or any person engaged in the Undirected Research on
the Institute's behalf may present at seminars, symposia, national, or
regional professional meetings, and publish in journals, theses or
dissertations, or otherwise of their own choosing, the Directed Research
Results and the Undirected Research Results.
16.2 Notwithstanding Clause 16.1 Geron shall in all cases be provided with
copies of any proposed publication or presentation at least 42 days in
advance of the submission of the proposed publication or presentation.
Geron shall have 30 days after receipt of such copies to reject the
proposed presentation or proposed publication if, in its reasonable
opinion, a delay in publication or presentation is commercially
desirable or necessary to ensure that any Jointly Owned Intellectual
Property or Institute Intellectual Property is adequately protected. In
such event, Geron may require that the Supervisor or members of the
Research Team shall refrain from making such publication or presentation
for a maximum further period of three (3) months in order for patent
applications to be filed directed to the patentable subject matter
contained in the proposed publication or presentation or that other
steps be taken in order to protect any commercially sensitive subject
matter including if Geron considers it appropriate the deletion of such
subject matter from the proposed publication or presentation. A delay or
deletion imposed on submission for publication as a result of a
requirement made by Geron shall not exceed 6 months from the date of
receipt of the original publication or presentation by Geron although
the Institute will not unreasonably refuse a request from Geron for
additional delay in the event that Jointly Owned Intellectual Property
might otherwise be lost or compromised.
17. LIMITATION OF LIABILITY
17.1 Each party shall indemnify and hold the other party harmless from and
against any and all claims, actions, damages, losses and expenses
resulting from personal injury to or death of any employee, agent or
representative of the other party engaged in the performance of the
Directed Research and Undirected Research except where such injury or
death is due to the negligent act or omission of the other party, its
employees, agents or representatives.
17.2 Whilst the Institute will use all reasonable endeavours to ensure the
accuracy of the Directed Research Results and the Undirected Research
Results, the Institute makes no warranty, express or implied, as to
accuracy and will not be held responsible for any consequence arising
out of any inaccuracies or omissions (unless such inaccuracies or
omissions are the result of wilful default on the part of the Institute)
and nothing contained in this Agreement shall constitute a condition,
warranty or representation that exploitation of the Directed Research
Results or the Undirected Research Results will not infringe the
Intellectual Property of any third party.
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17.3 The Institute and Geron each agree that, if they are notified by any
third party of any claim or potential claim arising from or in
connection with the Directed Research or the use of the Directed
Research Results, they shall:
17.3.1 forthwith inform the other party of such claim or potential
claim;
17.3.2 make no admission of any kind and take all reasonable steps to
prevent judgement by default being granted in favour of any such
third party; and
17.3.3 ensure that the other is given the right to conduct proper
consultations with the party concerned and the defence
(including, without limitation, settlement, litigation or
appeal) of any such claim.
If requested by either of the parties, such defence shall be jointly
conducted by Geron and the Institute. Unless the provisions of Clauses
13.4 or 13.5 apply, such jointly conducted defence will be at the joint
expense of the parties.
17.4 The parties agree that no liability whatsoever either direct or indirect
shall rest upon the Institute for the effects of any Product that may be
produced or adopted by Geron or any other party, notwithstanding that
the formulation of such Product may be based upon the Jointly Owned
Intellectual Property.
18. FORCE MAJEURE
18.1 If any party is prevented from the performance of its obligations under
this Agreement by any cause beyond its reasonable control it shall
immediately inform the other parties and shall be released from its
obligations under this Agreement for so long as such circumstances
prevail PROVIDED THAT it shall use its reasonable endeavours to avoid or
remove such causes of non-performance. If such circumstances endure for
a period of six (6) months either of the parties not in default may
terminate this Agreement upon giving to the other party not less than
twenty eight (28) days' written notice.
19. TERMINATION
19.1 Subject to Clause 19.5, this Agreement may be terminated immediately by
the Institute by service of a written notice upon the other in the event
of:
19.1.1 a failure by Geron to meet its payment obligations in respect of
the Directed Research Funding and/or the Undirected Research
Funding and/or any royalties arising under clause 10 which are
not in dispute which failure is not remedied forty eight (48)
days after receipt of written notification specifying the
alleged failure and the action required to remedy it; or
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19.1.2 the liquidation or bankruptcy of Geron, a receiver or similar
officer being appointed over Geron's assets or Geron ceasing to
carry on business or the equivalent of any of the foregoing
occurring in the United States of America or the jurisdiction
under the laws of which any permitted assignee of Geron is
incorporated;
19.1.3 Geron challenging the validity or contesting the ownership of
the Jointly Owned Intellectual Property, the Institute
Intellectual Property or the Institute's Background Intellectual
Property or claiming that any patent rights comprised in any of
the foregoing are not "necessary patents" within the meaning of
Commission Regulation EEC No. 240/96 or contesting the secrecy
or substantial nature of any know how.
19.2 Geron may terminate this Agreement (in relation to [*] only) if the
Institute does not find a suitable replacement or replacements for the
Supervisor or Supervisors pursuant to Clause 3.6.2. Geron's rights and
* obligations in relation to [*].
19.3 Upon termination of this Agreement howsoever arising the Institute shall
deliver up all information, materials and property supplied by Geron to
the Institute and shall not retain any copies in whatever form. The
Institute shall cease to conduct the Directed Research and shall deliver
up to Geron written details of all Directed Research Results together
with all reports in respect thereof prepared up to the date of
termination.
19.4 Lawful termination of this Agreement by Geron will not terminate:
19.4.1 any licences or exploitation rights arising prior to the date of
termination and granted to Geron in respect of any Jointly Owned
Intellectual Property pursuant to Clauses 9.1 and/or of any
Background Intellectual Property pursuant to Clause 9.2 or 9; or
19.4.2 Geron rights in relation to any Institute Intellectual Property
in respect of which it has exercised the Option in accordance
with Clause 10 prior to the date of termination; or
19.4.3 the licence granted to the Institute under Clause 9.3; or
19.4.4 any terms in this Agreement relating to any of the foregoing
licences or exploitation rights.
19.5 If this Agreement is lawfully terminated by the Institute, Geron shall
indemnify the Institute in respect of the balance of any sums which the
Institute would have received as the Directed Research Funding and the
Undirected Research Funding pursuant to this Agreement but for the
Institute's termination of this Agreement.
----------
* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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19.6 The provisions of Clauses 1, 6, 14 , 18, 19, and 28 shall not be
affected by the termination of this Agreement and the obligations
contained in such clauses shall, except as otherwise stated, survive
such termination and remain in full force and effect notwithstanding
such termination.
19.7 Any termination of this Agreement shall not prejudice or affect any
accrued rights or liabilities of the parties and the exercise by the
parties of any rights or remedies under the terms of this Agreement
shall be without prejudice to any other rights or remedies to which such
party may be entitled.
19.8 The Institute and RBM hereby agree that the Existing Research Agreement
will terminate with effect from the Commencement Date. The termination
of the Existing Research Agreement is without prejudice to any accrued
rights and obligations of the Institute and RBM as at the date of
termination thereof.
20. NOTICES
20.1 Notices under this Agreement shall be served by hand or by recorded
delivery mail, postage pre-paid and addressed as follows:
20.1.1 In the case of the Institute to:
Roslin Institute (Edinburgh)
Xxxxxx Xxxxxxxxxxxxx Xxxxxx
Xxxxxx
Xxxxxxxxxx
XX00 0XX
For the attention of: the Company Secretary
20.1.2 In the case of Geron to:
Geron Corporation
000 Xxxxxxxxxxxx Xxxxx
Xxxxx Xxxx
Xxxxxxxxxx 00000
Xxxxxx Xxxxxx of America
For the attention of: VP Corporate Development
20.1.3 In the case of RBM to:
ROSLIN BIO-MED LIMITED
Xxxxxx Xxxxxxxxxxxxx Xxxxxx
Xxxxxx
Xxxxxxxxxx
XX00 0XX
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For the attention of: the Managing Director
20.2 If a party changes its address for notification purposes, it shall give
the other parties prior written notice of the new address and the date
on which it shall become effective.
20.3 Notices served by mail shall be deemed to be delivered seventy two (72)
hours after the date of posting.
21. NON-ASSIGNATION
21.1 None of the parties may assign, transfer, sub-contract or otherwise
dispose of the benefit or burden of this Agreement to a third party
without the prior written consent of the other parties, such consent not
to be unreasonably withheld or delayed save that:
21.1.1 the Institute may assign the benefit or burden to a publicly
funded research body (including a trust, foundation or similar
body) which assumes all rights and obligations of the Institute
under this Agreement; and
21.1.2 Geron may assign the benefit and burdens of this Agreement in
connection with the sale of all or substantially all of the
assets of Geron whether by way of sale, merger or other
corporate reorganisation; and
21.1.3 Geron may assign the benefit and burden of this Agreement to its
Associate,
PROVIDED THAT in the case of an assignation pursuant to Sub-Clauses
21.1.2 or 21.1.3 if the Institute is able to reasonably demonstrate that
the proposed assignee is incapable of fulfilling Geron's obligations
under this Agreement then Geron will remain liable to the Institute to
procure the performance of such obligations notwithstanding that it may
have assigned this Agreement.
22. WAIVER
22.1 The failure of a party to exercise or enforce any right conferred upon
it by this Agreement shall not be deemed to be a waiver of any such
right or operate so as to bar the exercise or enforcement of such right
at any time or times thereafter.
22.2 No waiver or discharge shall be valid unless in writing and signed by
the relevant party against whom such waiver or discharge is sought to be
enforced.
23. ENTIRE AGREEMENT
23.1 This Agreement together with the Licence Agreement constitutes the
entire agreement between the parties in relation to the subject matter
hereof and applies to the exclusion of all other terms and conditions of
business including those of the Institute.
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23.2 No amendment, alteration or addition to the terms of this Agreement
shall be valid unless signed by or on behalf of the parties by an
authorised signatory of the parties.
24. PUBLICITY
24.1 None of the parties shall use the names of the other parties (and Geron
and RBM shall not use the name "Dolly" or the name of the Supervisors or
any member of the Research Team or other member of staff employed at the
Institute) in any publicity, advertising or news release without the
prior written consent of the other parties, such consent not to be
unreasonably withheld.
24.2 None of the parties may issue a press release in relation to this
Agreement without the consent of the other parties to the wording of the
press release, save where such release is required in order to comply
with any regulatory requirements.
25. NO PARTNERSHIP OR AGENCY
25.1 Nothing in this Agreement shall be deemed to constitute a partnership
between the parties nor shall any party have any authority to bind or
commit the other parties or have authority to act as the agent to the
other parties or in any other capacity other than as expressly
authorised in this Agreement.
26. ENTICEMENT
26.1 Geron undertakes that it shall not without the Institute's prior written
consent either during or within [*] after expiry or termination of this
Agreement for any reason engage, employ of or otherwise solicit for
* employment any person who, during the Research Periods was an employee
or engaged by or on behalf of the Institute in carrying out the Directed
Research or the Undirected Research. PROVIDED THAT the foregoing shall
not apply to [*].
27. STAMP DUTY ETC
27.1 If any stamp taxes or other similar taxes are levied on this Agreement
by reason of its execution or performance, it shall be the
responsibility of Geron to pay all such taxes when due. Such taxes shall
be in addition to other amounts payable by Geron under this Agreement
and shall not be set off against any of the amounts due to the Institute
under this Agreement.
27.2 Geron agrees to release and indemnify the Institute and keep it
indemnified from and against all liability of whatever nature arising
out of Geron's failure duly and timely to pay and discharge any of the
above mentioned taxes.
----------
* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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28. GOVERNING LAW
This Agreement shall be governed by and construed in accordance with the
Law of Scotland the and the parties hereby submit to the non-exclusive
jurisdiction of the
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Scottish courts.
IN WITNESS WHEREOF these presents consisting of this and the preceding 34 pages
are executed as follows:
Subscribed for and on behalf of )
GERON CORPORATION )
at )
on the day of 1999 )
by its Vice President )
-----------------------------
Vice President
Before the following witness:
Name
--------------------------------------
Address
----------------------------------- ------------------------------
Witness
-----------------------------------
Occupation
--------------------------------
Subscribed for and on behalf of )
ROSLIN BIO-MED LIMITED (EDINBURGH) )
at )
on the day of 1999 )
by one of its Directors )
-----------------------------
Director
Before the following witness:
Name
--------------------------------------
Address
----------------------------------- ------------------------------
Witness
-----------------------------------
Occupation
--------------------------------
Subscribed for and on behalf of )
ROSLIN BIO-MED LIMITED )
at )
on the day of 1999 )
by one of its Directors )
-----------------------------
Director
Before the following witness:
Name
--------------------------------------
Address
----------------------------------- ------------------------------
Witness
-----------------------------------
Occupation
--------------------------------
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SCHEDULE
PART 1(a)
PRINCIPLES FOR RECHARGING OF COSTS
(a) DIRECT LABORATORY COSTS
The actual costs incurred by the Institute in conducting the Directed
Research and Undirected Research in respect of:
(i) Salary, national insurance and pension contributions for
research scientists and technical support scientists who are
members of the Research Teams; plus
(ii) Laboratory consumables and equipment costs used in the Directed
Research and Undirected Research as authorised by the written
authorisation of the Institute's project manager in each case;
plus
(iii) Other costs incurred directly as a result of the Directed
Research and the Undirected Research as authorised by the
Institute's project manager and approved by the Project Board
(b) FARM
A reasonable market rate for animal process through the Institute's farm
together with any reasonable additional costs (including labour, feed,
veterinary costs and other such costs actually incurred by the Institute
as a result of implementing such procedures as may be agreed by the
Institute and Project Board as reasonably necessary to properly conduct
the Directed Research and Undirected Research. The reasonable market
rate per animal and the additional costs shall be no more than the ratio
Project Board can show by written evidence may be obtained from at least
two similar facilities and staff with commensurate skills. The
reasonable market rate is calculated by taking the average market price
of a similar animal over the previous twelve (12) months.
(c) LARGE ANIMAL UNIT ("XXX")
A per animal charge used in the Directed Research and Undirected
Research, such charge based upon the Institute's total direct cost
(including but not limited to labour, equipment, veterinary costs and
other such costs required to maintain the facilities as agreed between
the parties), multiplied by the total number of animals to be processed
through the XXX in the relevant year.
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(d) OVERHEADS
* To be allocated as a percentage of Direct Research costs. The percentage
to be charged is [*] and will be subject to annual review and agreement
between the Institute and Project Board. In the event of agreement not
being reached the agreed percentage for the preceding year will be
retained.
PART 1(b)
ADMINISTRATIVE SERVICE AGREEMENT
The parties will enter into negotiations in good faith and shall within
45 days enter into a detailed Administrative Services Agreement
providing inter alia for office accommodation, use of equipment and
computers and other services to be provided by the Institute to RBM in
addition to the cost set out in Schedule Part 1(a) above.
----------
* Material has been omitted pursuant to a request for confidential treatment.
Such material has been filed separately with the Securities and Exchange
Commission.
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41
THE SCHEDULE
PART 2
FORM OF UNDERTAKING
In consideration of my being engaged to carry out for Geron Corporation ("the
Company") the Research as defined in the agreement between Geron Corporation,
Geron Bio-Med Limited and Roslin Institute (the Institute) dated May 3 1999, I
hereby represent and agree as follows:
1. I understand that the Company in engaged in a continuous
programme of research, development, production and marketing in
connection with its business and that I am expected to make new
contributions to and create inventions of value for the Company.
2. I confirm that I will promptly disclose in confidence to the
Company all inventions, improvements, original works of authorship,
formulas, processes, computer programs, databases and trade secrets
("Inventions"), whether or not patentable, copyrightable or protectable
as trade secrets, that are made or conceived or first reduced to
practice or created by me, either alone or jointly with others, during
the period of the Research, whether or not in the course of any
employment, which were or are related in any way to the business of the
Company, similar to or competitive with the products or Research and
development activities of the Company, or sold to the Company's
customers or potential customers.
3. I agree that all Inventions that (a) are developed using
equipment, supplies, facilities or trade secrets of the Company, (b)
result from work performed by me for the Company or (c) relate to the
Research, the business or the actual research or development of the
Company, will be the sole and exclusive property of and are (to the
extent not already assigned) hereby assigned to the Company and I hereby
irrevocably and unconditionally waive in favour of the Company the moral
rights (if any) conferred to me by Part 1, Chapter IV, of the Copyright,
Design and Patents Xxx 0000 in respect of such Inventions in which the
copyright is vested in the Company. I understand that the provisions of
this paragraph shall be without prejudice to the provisions of the
Patents Xxx 0000.
4. I agree to assist the Company in every proper way to obtain for
the Company and enforce patents, copyrights and other legal protections
for the Company's Inventions in any and all countries, subject to the
company meeting any out of pocket costs and expenses. I will execute any
documents that the Company may reasonably request for use in obtaining
or enforcing such patents, copyrights and other legal protections. My
obligations under this paragraph will continue beyond the period of the
Research. In the event the Company is unable for any reason, after
reasonable effort, to secure any signature on any document needed in
connection with the actions specified in this
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paragraph, I hereby irrevocably appoint the Company and its duly
authorised officers and agents as my agent and attorney to act for and
in my behalf to execute, verify the file any such documents and to do
all other lawfully permitted acts to further the purposes of the
preceding paragraph with the same legal force and effect as if executed
by me. I hereby waive in favour of the Company any and all claims, of
any nature whatsoever, which I now or may hereafter have for
infringement of any rights assigned hereunder to the Company.
5. I understand that this Agreement has created and creates a
relationship of confidence and trust with respect to any information of
a confidential or secret nature that may have been or may be disclosed
to me by the Institute or the Company that relates to the Research, the
business of the Company or to the business of any patent, subsidiary,
affiliate, customer or supplier of the Company or other third party
("Proprietary Information"). Such Proprietary Information includes but
is not limited to Inventions, ideas, data, know-how, developments,
designs, techniques, marketing plans, product plans, business
strategies, financial information, forecasts, personnel information and
customer lists.
6. At all times and in perpetuity I will keep all such Proprietary
Information in confidence and trust, and I will not use or disclose any
of such Proprietary Information without the written consent of the
Company, except to the extent that such Proprietary Information:
(a) is generally available to the public otherwise than by
breach by me or a third party of a duty of confidentiality to
the Company;
(b) is subsequently disclosed to me without obligation of
confidentiality by a third party owing no such obligation
thereof;
(c) is required to be disclosed by any governmental or other
authority or otherwise legally required to be disclosed.
Upon termination of my engagement at the Institute to carry out the
Research, I will promptly deliver to the Company all documents and
materials of any nature pertaining to my work and I will not take with
me any documents or materials or copies thereof containing any
Proprietary Information.
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7. I confirm, and agree that during the period of the Research I
will not engage, without the Company's express written consent, in any
other employment or business activity; and that for a period of six
months thereafter, I will not be interested in or provide any services
to another undertaking in the field of the Research. I confirm and agree
further that for a period of the Research and six months thereafter I
will not (i) induce any employee of the Institute to leave the employ of
the Institute and (ii) solicit the business of any client or customer of
the Company (other than on behalf of the Company).
8. I represent that my performance of all terms of this Agreement
and the Research will not breach any terms of any contract of employment
or any invention, assignment or proprietary information agreement with
any employer or other party. I represent that I will not bring with me
to the Institute or use in the performance of the Research any documents
or materials of a former or present employer that are not generally
available to the public.
9. This Agreement will be governed by and construed according to
Scottish law and the parties submit to the non-exclusive jurisdiction of
the Scottish courts. If any provision of this Agreement is deemed
unenforceable by law, then such provision will be deemed severed from
this Agreement, unless it can be modified by a court so as to render it
enforceable with the intent of the Agreement, and the remaining
provisions will continue in full force and effect. I understand that in
the event of a breach or threatened breach of this Agreement by me the
Company may suffer irreparable harm and will therefore be entitled to
interim or injunctive relief to enforce this Agreement.
10. This Agreement together with the terms and conditions of my
employment with Biotechnology and Biological Sciences Research Council
("BBSRC") at the Institute is the final, complete and exclusive
agreement of the parties with respect to the subject matter hereof and
supersedes all prior representations. In the event of any conflict
between this Agreement and the terms and conditions of my employment
with BBSRC the terms of this Agreement will prevail. No modification of
or amendment to this Agreement, nor any waiver of any rights under this
Agreement, will be effective unless in writing and signed by both
parties.
11. I understand that this Agreement does not constitute a contract
of employment or obligate the Company, BBSRC and the Institute to employ
me for any stated period of time. This Agreement shall be effected as of
the first day of my employment.
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I HAVE READ THIS AGREEMENT CAREFULLY AND UNDERSTAND ITS TERMS
RESEARCHER
COMPANY
By:
-------------------------------
By:
-------------------------------
Title:
----------------------------
Title:
-------------------------
Date:
-----------------------------
Date:
---------------------------
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